DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-10 were rejected in the Office Action from 09/26/2025.
Applicant filed a response, amended claims 1-10 and added claims 11-15.
Claims 1-15 are currently pending in the application and are being examined on the merits in this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 7 requires “a mass fraction of the composite A@B is 0.05-2 wt.% of a total weight of the composite proton exchange membrane”. This amendment does not appear to be supported by the originally filed disclosure. The examiner was unable to locate where the originally filed specification contemplated a mass fraction of the composite A@B is 0.05-2 wt.% of a total weight of the composite proton exchange membrane. The specification only describes a “mass concentration of the composite A@B in the dispersion liquid S1 in step (1) is 0.05-2 mg/10mL” in the preparation method of the composite membrane and “a mass fraction of the composite A@B is 0.05-2 wt%” which appears to be in relation of the “raw materials” and not the final product of the composite membrane. Therefore, it is not clear whether Applicant was in possession of the composite membrane as recited in the instant claims.
Regarding dependent claims 2-6 and 8-15, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 10 and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “prepared by polymerization of raw materials comprising polybenzimidazole, a composite A@B, and phosphoric acid…” and “a mass ratio of component A to component B in the composite A@B is 1:1-1:20”. It is not clear what is required by these limitations. The claim is directed to a composite membrane but the amendment introduces a process language (i.e., prepared by polymerization) and also include the term “raw materials” rather than clearly reciting structural components of the final membrane. It is therefore unclear whether the claim is limited by the manufacturing process, by the starting materials (i.e., raw materials), or the final structural composition of the membrane. In addition, it is not clear if the recited mass ratio of component A to component B present in the composite A@B is in reference to the raw materials or in the final composite membrane. Accordingly, the meets and bounds of the claim are uncertain. For purposes of examination, the claim is interpreted as comprising composite A@B. Polybenzimidazole and phosphoric acid are interpreted as raw materials and not structural components in the final composite membrane. Similarly, claims 5-6 are directed to a preparation method of the composite membrane and do not further limit the structure of the composite membrane itself.
Regarding dependent claims 2-6, 10 and 15, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6, 10 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (U.S. Patent Application Publication 2022/0209271) and further in view of Shao et al. (CN106336518A – cited in IDS).
The Examiner has provided a machine translation of CN106336518A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 1, Kim teaches a composite proton exchange membrane for fuel cell (i.e., polymer electrolyte membrane and a radical scavenger) (paragraph [0081]-[0090]), comprising raw materials of a composite A@B, wherein A is nanoparticles with free radical quenching function, B is C3N4 with a nanosheet structure (i.e., CeO2 nanoparticles and dicyandiamide) (paragraph [0114]-[0115]) (see figures 5-6 where radical scavenger is disposed in the polymer electrolyte membrane).
Kim does not teach the specifics of the raw materials of polybenzimidazole (PBI) and phosphoric acid.
Shao, also directed to a composite film, teaches PBI as the most outstanding polymer-based material as it shows great effectiveness and feasibility in high temperature proton exchange membranes (page 1, lines 50-55). Further, Shao teaches phosphoric acid is used to impregnates the PBI (page 2, lines 35-40).
As such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the membrane of Kim and add PBI and phosphoric acid in order to increase effectiveness and feasibility of the membrane in high temperatures as suggested by Shao.
As to the limitation “a mass fraction of the composite A@B is 0.05-2 wt.%, and a mass ratio of A to B in the composite A@B is 1:1-1:20”, the art suggests that the relative amounts of the raw materials can be adjusted to control thickness and average pore size (paragraph [0072]-[0074]) suggesting that concentration can be varied to achieve a particular performance. As such, choosing a particular mass fraction or ratio to include the ones claims would be obvious to a person of ordinary skill in the art to find a workable value where optimum thickness and pore size is achieved which would be directly related to the performance of the membrane as such allows selective permeability or migration of metal ions (paragraph [0012], [0044]).
Regarding claim 2, Kim teaches nanoparticles of components A (i.e., particle 110) are supported on the nanosheet of components B (i.e., protective film) (paragraph [0051]) (see figure 2) and the thickness of the nanosheet is 0.5 to 50nm which overlaps the claimed range (paragraph [0023]). As to the nanoparticles A diameter, Kim teaches A is CeO2 nanoparticles which is known to be commercially available in different sizes including 10nm1.
Regarding claim 3, Kim, as modified by Shao, teaches mPBI (page 2, lines 1-10 of Shao) and A is CeO2 (paragraph [0114]-[0115]).
Regarding claim 4, Kim teaches the composite A@B is that nanoparticles of CeO2 loads on nanosheet of C3N4 ((paragraph [0051], [0081]-[0090], [0114]-[0115]).
Regarding claims 5-6, it is noted that the instant claims are directed to a preparation method of the composite membrane and do not further limit the structure of the composite membrane itself. As such, unless the claimed process of preparing the membrane imparts a different property or structure from that of the prior art then the composite membrane of Kim would be the same even if is made by a different process. As provided in the MPEP, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 10, Kim teaches the membrane is used in fuel cells (paragraph [0002]-[0009]).
Regarding claim 15, Kim teaches component A are nanoparticles of CeO2 (paragraph [0114]-[0115]), but does not teach MnO2, Mn2O3, Fe3O4, and TiO2. However, Shao teaches CeO2 (same as Kim) and MnO2 particles can effectively quench free radicals generated during operation of the membrane (page 2, lines 1-8). As such, it would be obvious to a skilled artisan to modify Kim and use MnO2 particles as opposed to CeO2 in order to effectively quench free radicals generated during operation of the membrane.
Allowable Subject Matter
Claims 7-9 and 11-14 are allowed. The prior art fails to teach all the limitations of the preparation method as recited in independent claim 7. Regarding dependent claims 8-9 and 11-14, the claims are allowed based on their dependency of claim 7.
Response to Arguments
Examiner appreciates the amendments to the clams to correct the previous objection and rejection under 112(b) and 112(d). Consequently, the previous objections and rejections under 112(b) and 112(d) are withdrawn. However, the new amendments introduce new issues under 112(a) and 112(b) as presented above.
Applicant arguments with respect to the claims have been considered but are moot because the arguments are drawn to the new amendments and such have been addressed above.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kim (U.S. Patent Application Publication 2022/0263108). Kim teaches a composite membrane (i.e., membrane-electrode assembly) (abstract) having C3N4 (paragraph [0006]), phosphoric acid, and polybenzimidazole (paragraph [0057]-[0058]).
Correspondence
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN ROLDAN whose telephone number is (571)272-5098. The examiner can normally be reached Monday - Thursday 9:00 am - 7:00 pm.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723
1 https://www.acsmaterial.com/cerium-oxide-ceo2.html